OPPOSITION No B 2 647 900

Arnetts LLC, 160 Greentree Drive, Dover, Delaware 19004, United States of America (opponent), represented by Cooley (UK) LLP, Dashwood, 69 Old Broad Street, London EC2M 1QS, United Kingdom (professional representative)

a g a i n s t

LG Electronics Inc., 128 Yeoui-daero, Yeongdeungpo-gu, Seoul 150-721, South Korea (applicant), represented by Cohausz & Florack Patent- Und Rechtsanwälte Partnerschaftsgesellschaft MBB, Bleichstr. 14, 40211 Düsseldorf, Germany (professional representative).

On 08/03/2017, the Opposition Division takes the following

DECISION:

1.        Opposition No B 2 647 900 is partially upheld, namely for the following contested goods:

Class 9: Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computers; Printers for use with computers; Light emitting diode (LED) displays; Leather case for tablet PC; Flip cover for tablet PC; Portable computers; Chargeable batteries; Battery compensation chargers; Network surveillance cameras; Television receivers; Display for television receivers; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Earphones; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head mounted video display; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers.

Class 14: Watches; Parts and fittings for watches; Wristwatches; Watch bands; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players and that communicate data to smart phones and PDAs.

2.        European Union trade mark application No 14 677 439 is rejected for all the above goods. It may proceed for the remaining goods.

3.        Each party bears its own costs.

REASONS:

The opponent filed an opposition against all the goods of European Union trade mark application No 14 677 439. The opposition is based on European Union trade mark registration No 9 276 189. The opponent invoked Article 8(1)(b) EUTMR.

PROOF OF USE

In accordance with Article 42(2) and (3) EUTMR (in the version in force at the time of filing of the opposition), if the applicant so requests, the opponent shall furnish proof that, during the five-year period preceding the date of publication of the contested trade mark, the earlier trade mark has been put to genuine use in the territories in which it is protected in connection with the goods or services for which it is registered and which the opponent cites as justification for its opposition, or that there are proper reasons for non-use. The earlier mark is subject to the use obligation if, at that date, it has been registered for at least five years.

The same provision states that, in the absence of such proof, the opposition shall be rejected.

On 05/08/2016, the opponent requested proof of use of European Union trade mark registration No 9 276 189. In the present case, the contested trade mark was published on 30/10/2015. The earlier mark was registered on 03/02/2011. Therefore, as indicated by the Office on 23/08/2016, the request for proof of use is not admissible because the earlier trade mark had not been registered for at least five years at the date of publication of the contested trade mark application.

 

LIKELIHOOD OF CONFUSION – ARTICLE 8(1)(b) EUTMR

A likelihood of confusion exists if there is a risk that the public might believe that the goods or services in question, under the assumption that they bear the marks in question, come from the same undertaking or, as the case may be, from economically linked undertakings. Whether a likelihood of confusion exists depends on the appreciation in a global assessment of several factors, which are interdependent. These factors include the similarity of the signs, the similarity of the goods and services, the distinctiveness of the earlier mark, the distinctive and dominant elements of the conflicting signs and the relevant public.

1. The goods and services

The goods and services on which the opposition is based are the following:

Class 9: Handheld and portable electronic devices for the recording, transmission, reproduction, sending and receiving of text, images, sound, telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, electronic publications and other digital data; handheld and portable computers, personal digital assistants, electronic organizers, electronic notepads and electronic notebooks; mobile phones, video phones, cameras; smart phones; handheld and portable wireless reading devices; computer hardware in the field of data and sound transmission; downloadable audio works, visual works, and electronic publications.

Class 38: Wireless communication services; electronic transmission of images, sound and text.

Class 41: Electronic publishing information services.

The contested goods are the following:

Class 9: Smartphones; Display for smart phones; Mobile phones; Wearable smart phone; Wireless headsets; Headsets; Wireless headset for cellphones; Wireless headsets for smartphones; Digital set top boxes; Leather case for mobile phones; Leather case for smart phones; Flip cover for mobile phones; Flip covers for smart phones; Tablet PC; Monitor for computers; Monitors for commercial purposes; Wearable computers; Computers; Printers for use with computers; Light emitting diode (LED) displays; Leather case for tablet PC; Flip cover for tablet PC; Portable computers; Chargeable batteries; Battery compensation chargers; Network surveillance cameras; Television receivers; Display for television receivers; Audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; Apparatus for the recording/transmission or reproduction of sound and images; Earphones; DVD players; Handheld media players; Speakers; Digital cameras; Wireless cameras; 3D spectacles; Virtual reality game software; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; Head mounted video display; Watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers.

Class 14: Watches; Parts and fittings for watches; Wristwatches; Electronic clocks and watches; Bracelets with precious metal; Watch bands; Control clocks; Watches with wireless communication function; Watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; Watches incorporating cameras and MP3 players and that communicate data to smart phones and PDAs.

As a preliminary remark, it is to be noted that according to Article 28(7) EUTMR, goods or services shall not be regarded as being similar or dissimilar to each other on the ground that they appear in the same or different classes under the Nice Classification.

The relevant factors relating to the comparison of the goods or services include, inter alia, the nature and purpose of the goods or services, the distribution channels, the sales outlets, the producers, the method of use and whether they are in competition with each other or complementary to each other.

Contested goods in Class 9

The contested smartphones, mobile phones and portable computers are identically reproduced in both lists.

The contested wearable smartphones are included in the opponent’s broad category of smart phones. Therefore, these goods are identical.

The opponent’s computer hardware in the field of data and sound transmission are physical parts or components of a computer, such as the monitor, keyboard, hard disk drive, sound card, motherboard, etc., all of which are tangible physical objects. It follows that the contested printers for use with computers; light emitting diode (LED) displays; monitor for computers; monitors for commercial purposes are included in the opponent’s goods and are, therefore, identical.

The contested ‘wearable computers’ is synonymous with the opponent’s portable computers and, consequently, these goods are identical.

The contested computers include, as a broader category, the opponent’s handheld and portable computers. Since the Opposition Division cannot dissect ex officio the broad category of the contested goods, they are considered identical to the opponent’s goods.

The opponent’s handheld and portable electronic devices for the recording, transmission, reproduction, sending and receiving of text, images, sound, telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, electronic publications and other digital data are lightweight devices that are electrically powered or battery powered and typically capable of communications and data processing functions. Therefore, the contested tablet PC; DVD players; handheld media players; 3D spectacles; wearable telecommunication devices for the wireless receipt, storage and/or transmission of data and messages; head mounted video display; watchbands that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; bracelets with precious metal that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; wearable digital electronic devices comprised primarily of a wristwatch and also featuring a telephone, software and display screens for viewing, sending and receiving texts, emails, data and information from smart phones, tablet computers and portable computers are included in or overlap with the opponent’s goods. Therefore, these goods are considered identical.

The contested network surveillance cameras; digital cameras; wireless cameras are included in the opponent’s cameras and are, therefore, identical.

The contested audio components system, comprising surround sound speakers, loud speakers, tuners, sound mixers, equalizers, audio recorders, and radios; apparatus for the recording/transmission or reproduction of sound and images; speakers include, as broad categories, the opponent’s handheld and portable electronic devices for the recording, transmission, reproduction, sending and receiving of text, images, sound, telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, electronic publications and other digital data. Since the Opposition Division cannot dissect ex officio the respective broad categories of the contested goods, they are considered identical to the opponent’s goods.

The contested display for smart phones; wireless headsets; headsets; wireless headset for cellphones; wireless headsets for smartphones; leather case for mobile phones; leather case for smart phones; flip cover for mobile phones; flip covers for smart phones; battery compensation chargers; earphones are accessories that are complementary to the opponent’s mobile phones and smart phones. These goods are, moreover, brought to the market by the same producers, they target the same public and they have the same distribution channels. Consequently, these goods are similar.

The contested digital set top boxes; television receivers; display for television receivers are capable of receiving and displaying digital television and form a vital link in the chain of a television system. Even if the opponent’s electronic devices for, e.g. the reproduction of images and sound are handheld and portable, this does not render them less similar. Their purpose of the reproduction of images and sound is the same, they can be manufactured by the same companies, which use the same techniques and know-how, and they target the same public. These goods can all be found close to each other in the same stores. It follows that these goods are considered similar.

Leather case for tablet PC; flip cover for tablet PC; chargeable batteries are accessories complementary to the opponent’s handheld and portable computers, which are brought to the market by the same companies. They target the same public and they have the same distribution channels. Therefore, these goods are similar.

The contested virtual reality game software is complementary to the opponent’s computer hardware in the field of data and sound transmission since only together do they form a usable system. Consequently, the one is indispensable for the other. Moreover, these goods target the same public and they are sold together in the same stores. Consequently, these goods are considered similar.

Contested goods in Class 14

The contested watches; parts and fittings for watches; wristwatches; watch bands; watches with wireless communication function; watches that communicate data to personal digital assistants, smart phones, tablet computers, and personal computers through internet websites and other computer and electronic communication networks; watches incorporating cameras and MP3 players and that communicate data to smart phones and PDAs include or are watches or their parts with functionalities that go beyond timekeeping only, even if they are classified in Class 14 (including their complementary parts and fittings, such as watch bands). They are effectively wearable computers that use a mobile operating system and can function as portable media players via Bluetooth or USB. Therefore, the dividing line between the different categories of watches and the opponent’s smart phones and computer hardware in the field of data and sound transmission is nowadays blurred. These goods are manufactured by the same companies, they are sold in the same shops and they target the same public. They can, moreover, have the same method of use. Therefore, these goods are considered similar.

In the case of the contested electronic clocks and watches and control clocks, however, this reasoning does not apply, since these goods are clearly of a different nature as they do not have such data processing functions. These goods are made of the traditional timekeeping elements and are either electrically powered or driven by batteries. They are manufactured by different companies, using different techniques. Moreover, they are not sold in the same shops as the opponent’s goods in Class 9, nor do they have any points in common with the opponent’s services in Classes 38 and 41. Consequently, these goods are dissimilar.

The contested bracelets with precious metal are jewellery products and are dissimilar to all the opponent’s goods and services. They are of a completely different nature, they have a different purpose, they do not target the same public and they are produced by different manufacturers. They are not complementary to, or in competition with, the opponent’s goods and/or services.

2. Relevant public — degree of attention

The average consumer of the category of products concerned is deemed to be reasonably well informed and reasonably observant and circumspect. It should also be borne in mind that the average consumer’s degree of attention is likely to vary according to the category of goods or services in question.

In the present case, the goods found to be identical or similar are directed either at the public at large or at business customers with specific professional knowledge or expertise.

In the present case, the goods found to be identical or similar are partly directed at the public at large and partly specialised goods and services directed at business customers with specific professional knowledge or expertise. The degree of attention may vary from average to high depending on the price of certain technological goods.

3. The signs

CANVAS	S CANVAS
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C-251/95, Sabèl, EU:C:1997:528, § 23).

The unitary character of the European Union trade mark means that an earlier European Union trade mark can be relied on in opposition proceedings against any application for registration of a European Union trade mark that would adversely affect the protection of the first mark, even if only in relation to the perception of consumers in part of the European Union (18/09/2008, C-514/06 P, Armafoam, EU:C:2008:511, § 57). Therefore, a likelihood of confusion for only part of the relevant public of the European Union is sufficient to reject the contested application.

In the present case, the Opposition Division finds it appropriate to focus the comparison of the signs on the English-speaking part of the relevant public.

Since both marks are word marks, they have no elements that could be considered clearly more distinctive or more dominant (visually eye-catching) than other elements.

The element that they have in common, namely ‘CANVAS’, refers in English to ‘a strong, heavy cloth that is used for making things such as tents, sails and bags’. Clearly, this word has no meaning in relation to the relevant goods and, therefore, has a normal degree of distinctiveness.

Visually, the signs coincide in the letters ‘CANVAS’, which make up the entire earlier sign. They differ only in the additional letter ‘S’ of the contested mark.

Therefore, the signs are visually highly similar.

Aurally, the pronunciation of the signs coincides in the syllables ‘CAN-VAS’, present identically in both signs. The pronunciation differs only in the sound of the additional letter ‘S’ of the contested mark, which has no counterpart in the earlier sign.

Therefore, the signs are aurally highly similar.

Conceptually, as both signs will be perceived by the relevant public as referring to ‘a strong, heavy cloth that is used for making things such as tents, sails and bags’, the signs have the same concept. The additional letter ‘S’ in the contested mark does not change that meaning and thus does not affect the conceptual similarity between the marks.

Therefore, the signs are conceptually highly similar.

As the signs have been found similar in at least one aspect of the comparison, the examination of likelihood of confusion will proceed.

4. Distinctiveness of the earlier mark

The distinctiveness of the earlier mark is one of the factors to be taken into account in the global assessment of likelihood of confusion.

The opponent did not explicitly claim that its mark is particularly distinctive by virtue of intensive use or reputation.

Consequently, the assessment of the distinctiveness of the earlier mark will rest on its distinctiveness per se. In the present case, the earlier trade mark as a whole has no meaning for any of the goods in question from the perspective of the public in the relevant territory. Therefore, the distinctiveness of the earlier mark must be seen as normal.

5. Global assessment, other arguments and conclusion

The goods are partly identical, partly similar and partly dissimilar. The earlier mark’s degree of distinctiveness is average and the degree of attentiveness varies from average to high.

The marks are visually, aurally and conceptually highly similar. The only difference between the marks, caused by the additional letter ‘S’ in the contested mark is – contrary to the applicant’s arguments – insufficient to differentiate the marks aurally or conceptually. Consequently, the overall impression created by the marks is highly similar.

Considering all the above, the Opposition Division finds that, despite the high degree of attentiveness of the public for some of the relevant goods, there is a likelihood of confusion on the part of the English-speaking part of the public and, therefore, the opposition is partly well founded on the basis of the opponent’s European Union trade mark registration. As stated above in section c) of this decision, a likelihood of confusion for only part of the relevant public in the European Union is sufficient to reject the contested application.

It follows from the above that the contested trade mark must be rejected for the goods founds to be identical and similar to those of the earlier mark.

The rest of the contested goods are dissimilar. As identity between/similarity of goods and services is a necessary condition for the application of Article 8(1) EUTMR, the opposition based on this article and directed at these goods cannot be successful.

COSTS

According to Article 85(1) EUTMR, the losing party in opposition proceedings must bear the fees and costs incurred by the other party. According to Article 85(2) EUTMR, where each party succeeds on some heads and fails on others, or if reasons of equity so dictate, the Opposition Division shall decide a different apportionment of costs.

Since the opposition is successful only for part of the contested goods, both parties have succeeded on some heads and failed on others. Consequently, each party has to bear its own costs.

The Opposition Division

Zuzanna STOJKOWICZ

Cynthia DEN DEKKER

Jessica LEWIS

According to Article 59 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 60 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.